How KSR v. Teleflex will affect Patent Prosecution in the Electrical and Mechanical Arts

Theresa R. Stadheim, University of Minnesota - Twin Cities

Abstract

In KSR International Co. v. Teleflex Inc, the Supreme Court held that the test for obviousness used by the Federal Circuit was inconsistent with 35 U.S.C. §103 and Supreme Court precedent. Specifically, the Court held that the Federal Circuit gave too much weight to the “teaching, suggestion and motivation” test (TSM) which requires a specific finding of some motivation, teaching, or suggestion to combine prior art teachings in the particular manner claimed before a claim may be found invalid. In general, KSR will make patent claims easier to invalidate and more difficult to obtain and defend. Patent attorneys and scholars agree that the impact of this decision may be greater for electrical and mechanical cases as opposed to chemical inventions. This paper discusses how and why the impact will be greater for electrical and mechanical cases, and how patent attorneys in general plan to change their patent prosecution strategies based on KSR.